Scoops & Sweet Bubbles Brief in Support of Motion To Dismiss

USDC IN/ND case 3:21-cv-00634-DRL-MGG document 11-1 filed 10/14/21 page 1 of 5
IN THE UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA
SOUTH BEND DIVISION
BUBBLES ICE CREAM PARLOR )

& PIE SHOPPE, INC., )
)
Plaintiff )
v. ) Case No. 3:21-cv-00634-DRL-MGG
)
SCOOPS & SWEET BUBBLES, )
LLC, )
Defendant. )
Brief in Support of
Motion to Dismiss for failure to State a Claim and Lack of Jurisdiction
Defendant, Scoops & Sweet Bubbles, LLC (“Scoops”) has moved to dismiss
the Complaint for failure to state a claim and for lack of supplemental jurisdiction.
Count I alleges a Federal Lanham Act violation. It fails to state a claim because it
does not allege interstate commerce and should be dismissed. Counts II and III
are Indiana State claims predicated on supplemental jurisdiction. The State
claims should be dismissed because supplemental jurisdiction does not exist
without a Federal claim.
A. Summary of Complaint.
The Complaint alleges that Plaintiff operates an ice cream stand in
Michigan City using this logo:
1
Complaint, Dkt. 1, pp. 3-4.
The Complaint also alleges that Defendant operates a storefront in
Michigan City that sells bubble tea, ice cream, sweet novelties and popsicles
using this logo:
Complaint, Ex. B, Dkt. 1-2, p. 4.
The gist of Plaintiff’s Complaint is that Defendant’s inclusion of the word

BUBBLES in its name to inform consumers that it sells bubble tea constitutes
“willful trademark infringement, false designation of origin, and unfair
competition.” Complaint, p. 8. However, the Complaint does not allege that the
products of either party entered interstate commerce. In fact, an automated
word search of the Complaint for “interstate” reveals no hits.
B. Count I fails to state a claim because it does not allege

“interstate commerce.”
Entry of goods or services into “interstate commerce” by a defendant is
one of the three elements required to state a Lanham Act claim:
A plaintiff must prove the following three elements to state a claim under the
Lanham Act: (1) that the defendant used a false designation of origin or false
description or representation in connection with goods or services; (2) that
2
such goods or services entered interstate commerce; and (3) that the plaintiff
is a person who believes he is likely to be damaged as a result of the
misrepresentation.
Kennedy v. Nat'l Juvenile Detention Ass'n, 187 F.3d 690, 695 (7th Cir. 1999).
Because the Complaint does not allege “interstate commerce,” it fails to
state a Lanham Act claim, and must be dismissed.
C. Plaintiff’s remaining state law claims should be dismissed for

lack of supplemental jurisdiction.
The criteria for declining to exercise supplemental jurisdiction are set forth
in 28 U.S.C. § 1367(c). District courts may decline to exercise supplemental
jurisdiction . . . if—
(1) the claim raises a novel or complex issue of State law,
(2) the claim substantially predominates over the claim or claims

over which the district court has original jurisdiction,
(3) the district court has dismissed all claims over which it has
original jurisdiction, or
(4) in exceptional circumstances, there are other compelling reasons

for declining jurisdiction. 1
Assuming the Court dismisses Count I for failure to state a claim, the
remaining state law claims for trademark infringement and unfair competition
should be dismissed because none of the above factors are present.
1
Williams Electronics Games, Inc. v. Garrity, 479 F.3d 904, 906 (7th Cir., 2007).
3
First, Plaintiff’s remaining claims do not raise novel or complex issues of
state law. Plaintiff alleges simple state law claims without any complexity.
Second, the claims do not substantially predominate over the claim over
which the district court has original jurisdiction because, as shown above, the
Court lacks original jurisdiction.
Third, the Court has no original jurisdiction over the remaining claims.
Fourth, there are no “exceptional circumstances” or “compelling reasons”
for the court to exercise supplemental jurisdiction.
A district court ultimately has discretion whether to exercise supplemental
jurisdiction over a plaintiff's state law claims. 2 When deciding whether to
exercise supplemental jurisdiction, “a federal court should consider and weigh in
each case, and at every stage of the litigation, the values of judicial economy,
convenience, fairness, and comity.” 3 “In the usual case in which all federal
claims are dismissed before trial, the balance of these factors will point to
declining to exercise jurisdiction over any remaining pendent state-law claims
rather than resolving them on the merits.” 4 This is the case here. If the Court
dismisses the Lanham Act claim, then it should dismiss the other claims as well.
This case is in an early stage; no summary judgment motion has been filed, nor
2
Stone v. Wright, Cause No. 2:17-cv-00092-JMS-MJD, at *8 (S.D. Ind., 2017), citing
Carlsbad Tech., Inc. v. HIF Bio, Inc., 556 U.S. 635, 639 (2009); 28 U.S.C. § 1367(c) (“The
district courts may decline to exercise supplemental jurisdiction over a claim . . . if . . . the
district court has dismissed all claims over which it has original jurisdiction . . . .”) (citation and
quotation omitted).
3
Stone v. Wright, Cause No. 2:17-cv-00092-JMS-MJD, at *8-9 (S.D. Ind., 2017); citing
City of Chi. v. Int’l Coll. of Surgeons, 522 U.S. 156, 173 (1997) (quoting Carnegie-Mellon Univ.
v. Cohill, 484 U.S. 343, 350 n.7 (1988)).
4
Stone v. Wright, Cause No. 2:17-cv-00092-JMS-MJD, at *9 (S.D. Ind., 2017), citing
Wright v. Associated Ins. Companies Inc., 29 F.3d 1244, 1251 (7th Cir. 1994).
4
has discovery begun. It would be in the best interest of judicial economy,
convenience, fairness and comity to dismiss the state law claims.

D. Conclusion.
The Complaint should be dismissed because Count I fails to state a claim,

and supplemental jurisdiction does not exist for the remaining State law claims.
Respectfully submitted,
Overhauser Law Offices LLC
By: s/Paul B. Overhauser

Paul B. Overhauser
Overhauser Law Offices LLC
18 E. Main St., Suite 202
Greenfield, IN 46140
P: 317-467-9100
[email protected]
Counsel for Defendant Scoops & Sweet
Bubbles, LLC

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USDC IN/ND case 3:21-cv-00634-DRL-MGG document 11-1 filed 10/14/21 page 1 of 5

IN THE UNITED STATES DISTRICT COURT

BUBBLES ICE CREAM PARLOR )

are Indiana State claims predicated on supplemental jurisdiction. The State

claims should be dismissed because supplemental jurisdiction does not exist

without a Federal claim.

The Complaint alleges that Plaintiff operates an ice cream stand in

Michigan City using this logo:

Complaint, Dkt. 1, pp. 3-4.

The Complaint also alleges that Defendant operates a storefront in

using this logo:

Complaint, Ex. B, Dkt. 1-2, p. 4.

The gist of Plaintiff’s Complaint is that Defendant’s inclusion of the word

“willful trademark infringement, false designation of origin, and unfair

products of either party entered interstate commerce. In fact, an automated

word search of the Complaint for “interstate” reveals no hits.

B. Count I fails to state a claim because it does not allege

Entry of goods or services into “interstate commerce” by a defendant is

one of the three elements required to state a Lanham Act claim:

Because the Complaint does not allege “interstate commerce,” it fails to

state a Lanham Act claim, and must be dismissed.

C. Plaintiff’s remaining state law claims should be dismissed for

in 28 U.S.C. § 1367(c). District courts may decline to exercise supplemental

(1) the claim raises a novel or complex issue of State law,

(2) the claim substantially predominates over the claim or claims

(4) in exceptional circumstances, there are other compelling reasons

First, Plaintiff’s remaining claims do not raise novel or complex issues of

Court lacks original jurisdiction.

Fourth, there are no “exceptional circumstances” or “compelling reasons”

for the court to exercise supplemental jurisdiction.

A district court ultimately has discretion whether to exercise supplemental

jurisdiction over a plaintiff's state law claims. 2 When deciding whether to

exercise supplemental jurisdiction, “a federal court should consider and weigh in

declining to exercise jurisdiction over any remaining pendent state-law claims

has discovery begun. It would be in the best interest of judicial economy,

convenience, fairness and comity to dismiss the state law claims.

The Complaint should be dismissed because Count I fails to state a claim,

Overhauser Law Offices LLC

By: s/Paul B. Overhauser

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